Ex Parte De Wolf et al

Patent Trial and Appeal Board

Apr 3, 2018

13993788 (P.T.A.B. Apr. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/993,788 06/13/2013 Cornelia Adriana De Wolf
152163 7590 04/05/2018
Akzo Nobel Chemicals LLC
525 W. Van Buren
Suite 1600
Chicago, IL 60607
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
AFC11112-US-Pl 2623
EXAMINER
BHUSHAN, KUMAR R
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
04/05/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
sc-ipani@akzonobel.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORNELIA ADRIANA DE WOLF,
MOHAMED AHMED NASR-EL-DIN MAHMOUD, and
HISHAMNASR-EL-DIN
Appeal 2017-010811
Application 13/993, 788 1
Technology Center 1700
Before ROMULO H. DELMENDO, A VEL YN M. ROSS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek our review of the
Examiner's rejection of claims 1-12, 20, and21. We have jurisdiction under
35 U.S.C. § 6.
We affrrm.
1 Appellants identify the real party in interest as Akzo Nobel Chemicals
International B. V. App. Br. 2.
Appeal 2017-010811
Application 13/993, 788
SUBJECT MATTER
The subject matter on appeal relates to a process for treating illite-
containing formations, such as sandstone formations, with a fluid containing
glutamic acid N,N-diacetic acid or a salt thereof(GLDA). Spec. 1:5-7.
Sole independent claim 1 is illustrative of the claimed subject matter
and is copied below:
1. Process for treating an illite-containing formation
comprising introducing an acidic fluid comprising glutamic acid
N,N-diacetic acid or a salt thereof (GLDA) into the illite-
containing formation and treating the illite-containing formation
with the acidic fluid.
App. Br. 17.
REJECTIONS 2
1. Claims 1-12, 20, and 21 are provisionally rejected under the
doctrine of obviousness-type double patenting over claims 1-16 of
application number 13/993,831, now U.S. Patent Number
9,587, 171, issued March 7, 2017 (Final Act. 22);
2. Claims 1-12, 20, and 21 are provisionally rejected under the
doctrine of obviousness-type double patenting over claims 1-5, 7-
11, 13-16 of application number 13/326,561, now U.S. Patent
Number 9, 150,780, issued October 6, 2015, alone or in view of
2 The provisional obviousness-type double patenting (OTDP) rejections over
co-pending application number 13/993,462 in view of Welton, with or
without Siebert, are moot in view of the Terminal Disclaimer filed over the
'462application, approvedAugust 15, 2017. Final Act. 20-22. The
provisional OTDP rejection over co-pending application number 13/993,539
is moot in view of applicants' abandonment of the '539 application. Final
Act. 22.
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Application 13/993, 788
Welton (US 2008/0035340 Al, published February 14, 2008) or
Siebert (US 4,495,292, issued January 22, 1985) (Final Act. 22);
3. Claims l-10and21arerejectedunder35U.S.C.§103(a)as being
unpatentable over Welton (Final Act. 23-27);
4. Claim 11 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Welton in view of Pauls (US 2007 /0281868 Al,
published December 6, 2007) (Final Act. 27-28);
5. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Welton in view ofFrenier (US 2004/0254079
Al, published December 16, 2004) (Final Act. 28-29);
6. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Welton in view of Siebert (Final Act. 29);
7. Claims 1-7, 9-10, 12, and 21 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Frenier in view of LePage (J.N LePage
et al., An Environmentally Friendly Stimulation Fluid for High-
TemperatureApplications, SPE JOURNAL 1-7 (2010)) (Final Act.
29-32);
8. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
overFrenier in view ofLePage, and further in view ofWelton
(Final Act. 32-33);
9. Claim 11 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Frenier in view ofLePage, and further in view
of Pauls (Final Act. 33-34); and
10. Claim 20is rejectedunder35 U.S.C. § 103(a)as being
unpatentable over Frenier in view ofLePage, and further in view
of Siebert (Final Act. 34--35).
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Application 13/993, 788
Rejections 1and2
OPINION
Because Appellants do not present any substantive arguments
regarding these rejections, we summarily sustain them. App. Br. 15. Hyatt
v. Dudas, 551F.3d1307, 1314(Fed. Cir. 2008).
Rejections 3-6
Because we reverse these rejections, we need only address claim 1.
The Examiner relies on the disclosure of Welton to conclude that the
subject matter of claim 1 would have been obvious to the skilled artisan.
Final Act. 23-26. Specifically, the Examiner fmds that Welton discloses the
tetrasodium salt of GLDA as "a choice of other limited number of chelating
agents," and because Welton teaches that "the present invention may be
modified and practiced in different but equivalent manners," "[i]t would
have been [an] obvious matter of choice or design ... to formulate a fluid
composition by use of GLDA salt." Final Act. 25.
Appellants challenge the Examiner's obviousness conclusion on
several grounds. App. Br. 3-11. One such contention is that the Examples
contained in the Specification demonstrate the superiority of GLDA over
other chelating agents disclosed by Welton such as HEDT A and H Cl, and
that the Examiner failed to properly consider this evidence of secondary
considerations. App. Br. 10-11; Reply Br. 7.
We are persuaded that Appellants have identified reversible error in
the Examiner's obviousness rejections based on Welton. Welton's
disclosure at paragraph 24 lists GLDA among nine specific chelating agents,
and an untold number of combinations or derivatives of such chelating
agents, as well as a large number of scale control agents. Importantly,
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Welton does not distinguish between the efficacy of the listed chelating
agents or scale control agents, and thus does not provide any direction as to
which agent is likely to be successful in achieving a regain in the
permeability of the sandstone to which it is applied beyond the lone
example. Rather, Welton expressly states that "any suitable chelating agent
or scale control agent may be used," and exemplifies EDT A. Welton iii! 24,
35.
Appellants point to evidence contained within their Specification to
establish that the recited GLDA achieves unexpectedly superior properties
over other chelating agents such as HEDT A. App. Br. 10-11. The
Examiner responds that because "Welton expressly discloses the GLDA is a
suitable chelating agent (para [0024 ]), the use of GLDA is specifically
taught and the unexpected properties ... were immaterial." Ans. 29.
The Examiner's treatment of Appellants' evidence constitutes error
because Appellants' evidence appears to be probative to the issue that a fluid
containing the recited GLDA achieves a different permeability ratio in a
Berea sandstone formation than does HEDT A. As such, it was improper for
the Examiner to dismiss such evidence as "immaterial." Ans. 29. In re
Arkley, 455 F.2d 586, 587-588(CCPA1972) (explaining that "the applicant
must be afforded an opportunity to rebut with objective evidence any
inference of obviousness which may arise from the similarity of the subject
matter which he claims to the prior art."). When, as here, Appellants present
evidence of secondary considerations, failure to consider or give such
evidence the weight that it is due is erroneous. In re Kao, 639 F.3d 1057,
1067 (Fed. Cir. 2011).
In view of the above, we reverse Rejections 3---6.
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Rejection 7
The Examiner relies on the combined disclosures of Frenier and
LePageto conclude that the subject matter of claims 1-7, 9-10, 12, and21
would have been obvious to the skilled artisan. Final Act. 29-32. To
support the obviousness conclusion, the Examiner fmds that Frenier
discloses a process for treating Berea sandstone, which inherently contains
illite, comprising introducing an acidic fluid comprising a chelating agent
such as hydroxyethylethylenediamine-tetraacetic acid (HEDT A). Final
Act. 30. The Examiner fmds further that LePage discloses a fluid
comprising glutamic acid N,N-diacetic acid (GLDA) which is used as a
chelating agent in sandstone formations. Final Act. 30-31. The Examiner
concludes that, based on LePage's teaching that "GLDA is less corrosive
and [is] readily biodegradable as compared to other chelating agents"
including HEDT A, the skilled artisan would have been motivated to
substitute Frenier's chelating agent with GLDA to realize such benefits
while treating a sandstone formation. Final Act. 31.
Appellants present arguments for claims subject to this rejection as a
group, so we select claim 1 as representative and decide the appeal of this
rejection on the basis of claim 1 alone. 37 C.F.R. 41.37(c)(l)(iv). App. Br.
14--15.
We are unpersuaded that Appellants have identified reversible error in
the Examiner's rejection. Appellants' arguments are largely based on the
individual reference teachings, and not to what the combined teachings of
the prior art would have suggested to the skilled artisan. Such arguments,
without more, do not identify error because"[ n ]on-obviousness cannot be
established by attacking references individually where the rejection is based
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upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole." In re Merck& Co., 800F.2d1091, 1097 (Fed. Cir.
1986).
Moreover, Appellants appear to be mistaken as to the rationale the
Examiner provides to support the obviousness conclusion. App. Br. 14. The
Examiner does not rely on an obvious-to-try theory as Appellants suggest,
but rather expressly states that "it would have been obvious to one of
ordinary skill in the art to have substituted the chelating agents such as NT A,
EDTAor HEDTAwith obvious variant GLDAin Frenier, as taught by
LaPage." Final Act. 31 (emphasis added). "[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result." KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007), citing United States v. Adams, 383 U.S. 39, 50-51
(1966).
In arguing this rejection (App. Br. 14--15), Appellants do not contend,
nor do we discern, that the results of the Examiner's proffered substitution of
Frenier's chelating agent for GLDA would be unpredictable. GLDAis
taught by LePage as being a "stimulation chemical that can be used as a
replacement for or in combination with acid treatments in deep wells,"
which "very effectively dissolves CaCQ3, and it is less corrosive to the
equipment and easy to handle." LePage 1. LePage discloses that "GLDA
has low toxicity and aquatic toxicity characteristics," and has "high
solubility under extremes in pH, high ionic strength, and low free-water
content [which] offers great flexibility in its use is various oilfield
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applications" such as stimulation. Id. at 1, 4. Based on such teaching, the
skilled artisan would have reasonably expected that GLDA could have been
substituted for any one ofFrenier's chelating agents with predictable results.
We also note that Appellants do not argue unexpected results with any
specificity with respect to this rejection. App. Br. 14. However, because
Appellants make a passing reference to "the data in the present
specification" (id.), and discuss Examples 1-3 of their Specification in the
Appeal Brief, albeit with respect to a different rejection based on a different
reference (App. Br. 10), we evaluate Appellants' evidence to the extent it is
discussed in the Brief, along with the facts on which the Examiner's
obviousness conclusion in this rejection was reached, supra, to determine
anew whether the process of claim 1 would have been obvious. In re
Rinehart, 531F.2d1048, 1052(CCPA1976). See also In re Klosak, 455
F.2d 1077, 1080(CCPA1972) (explaining that "the burden of showing
unexpected results rests on he who asserts them").
Example 1 in the Specification compares three chelating agents -
HEDT A, MGDA, and GLDA- each at a 0.6M concentration and pH of 4,
to determine their compatibility in a Berea sandstone core containing, inter
alia, 1 % illite and 2% calcite, and to determine their respective abilities to
stimulate the Berea sandstone cores by measuring the permeability ratios
achieved with each chelating agent, and that achieved with a solution of 15
wt% HCL Spec. 21:23-24:9, Figs. 1-3. Example 1 demonstrates thatthe
following permeability ratios were achieved:
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GLDA 1.74
HEDTA 1.24
MGDA 0.9
HCI 0.9
Example 2 compares the same agents at the same concentration and
pH as in Example 1, but in Bandera sandstone which has a concentration of
10% illite but no calcite. Spec. 23:8-10, 24:11-25:4, Fig. 4. The following
permeability ratios were achieved in Example 2:
GLDA 1.96
HEDTA 1.17
MGDA 1.0
HCI 0.18
Example 3 compares the permeability ratios achieved with one
concentration of GLDA (again, 0. 6M) at pH 4 in four sandstone formations
with differing illite content. Spec. 25:6-15, Fig. 5. Permeability ratios of
between 1. 60 and 1. 96 were achieved in this example.
Our analysis of this data begins by pointing out that "when
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art." In re
Baxter TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991). Here, the
primary Frenier reference discloses Berea sandstone formations, and LaPage
indicates that the tested sandstone contains calcite. Frenier iii! 69-70;
LaP age 1 (Summary), 2 (Experimental Procedures- "For the determination
of the calcite-dissolving capacity ... ").
Berea sandstone is the only type of sandstone tested by Appellants
that contains both illite and calcite. Spec. 23 :8-10. Thus, in order to
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compare Appellants' results with the closest prior art, i.e., that which
discloses illite and calcite, we need only consider Appellants' Example 1
which tests GLDA, HEDT A, MGDAand HCl in Berea sandstone. 3
Tumingnowto Appellant's Example 1, a solution of0.6M GLDAat
pH 4 was shown to demonstrate a higher permeability ratio in Berea
sandstone ( 1. 7 4) than was 0. 6M HEDT A at pH 4 in the same medium ( 1.24).
Based on the teachings ofLePage, however, we do not consider such a result
to be unexpected. For instance, LePage discloses that "a unique property of
GLDA is its high solubility; solutions exceeding 40 wt% can be achieved at
a pH of approximately 2, whereas HEDT A solubility is limited to
approximately 10 wt%." LePage 1. LePage also discloses that "chelates
such as GLDA that have high solubility at low pH can offer both high
calcite-dissolving power and chelation ability." LePage 5.
Based on these teachings, the skilled artisan would have recognized
that GLDA, having at least a four-fold solubility advantage over HEDT Aat
pH 2, would reasonably be expected to have more calcite-dissolving power
and chelation ability than would HEDT A. Because calcite is a component of
Berea sandstone (Spec. 23 :8-10), such results would have been expected to
occur therein. Expected beneficial results are not evidence of
nonobviousness. See In re Skoner, 517 F.2d 947, 950(CCPA1975).
Furthermore, evidence of secondary considerations must be
reasonably commensurate in scope with the claims. See In re Tiffin, 448
F.2d 791, 792(CCPA1971). Here, the evidence is not reasonably
commensurate in scope with the claims because Appellants' evidence
3 Example 1 inherently includes the Berea sandstone measurement of
Example 3.
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measures the effectiveness of different chelating agents at one concentration
and one pH value, whereas the claims are unlimited with respect to the
GLDA concentration and merely require the fluid containing the GLDA to
be "acidic."
Therefore, having weighed Appellants' evidence against the fmdings
supporting the Examiner's obviousness conclusion and discussed supra, we
conclude anew that claim 1 is prima facie obvious over the combined
disclosures ofFrenier and LePage. In re Rinehart, 531 F.2d at 1052.
For these reasons, we sustain Rejection 7.
Rejections 8-10
Appellants make no additional substantive arguments regarding these
rejections (App. Br. 15), so we sustain these rejections for the same reasons
given with respect to Rejection 7.
DECISION
We affrrm Rejections 1, 2, and 7-10.
We reverse Rejections 3---6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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